Westchester Women's Bar Association

Trademark Refusal for Failing to Function as a Trademark

The Trademark Trial and Appeal Board (the “Board”) has recently issued a number of refusals for applications on the basis that the term does not function as a trademark. The essence of this refusal is that the relevant public would not perceive the subject matter as indicating source. See In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010). The more commonly used a term, expression or symbol is the less likely the public will associate it with only one source. Moreover, if there are commonly used expressions in a particular industry this will be considered as well. See our page entitled, The Importance Of Selecting A Distinctive And Selective Mark, for the myriad of reasons why adopting a distinctive mark will significantly benefit a trademark owner.

These decisions are typically not precedential. However, there was a recent one at the end of 2019 marked precedential, see In re Ocean Technology, Inc., 2019 USPQ2d 450686 (TTAB 2019) [precedential]. In this case, the Board affirmed refusals to register design marks with the literal portion, ALL NATURAL GOURMET CRABMEAT PASTEURIZED and a design of a crab for crabmeat. To make a determination that the term fails to function as a trademark, the Examining Attorney and Board must review the specimens and other use evidence. In this case, the Board determined that the mark would NOT be perceived to identify only one source but would be merely informational.

When considering the design of the crab, the Board looked to precedents in the context of 2(d) refusals and 2(e)(1) refusals. In likelihood of confusion refusals design marks similar in impression and meaning to word marks will be found to likely confuse the consumer as to source. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974). In a merely descriptive context, a picture or illustration of the goods or services or an important feature of the goods or services will be held merely descriptive under Section 2(e)(1). See In re Underwater Connections, Inc., 221 USPQ 95 (TTAB 1983). The Board concluded that both the content of the mark and the manner in which it appears on the specimens was informational and not source indicating.

The manner of display of the mark certainly will be an important factor when determining if the term functions as a trademark. See adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (November 13, 2019) [not precedential]. Here the Board granted a petition to cancel for failure to function as a mark for the phrase ADD A ZERO for clothing, in standard characters, but denied the petition for cancellation on the same grounds for the design mark, ADD A ZERO. The Board held that the word mark only conveyed information containing a common slogan used by others while the design mark created a distinct commercial impression. The Board concluded that the shading of the design along with the placement of the elements, created a three-dimensional impression that would be perceived by consumers as indicating source and allowed the design mark for ADD A ZERO to move on to registration.

Yet, under other circumstances even a proper manner of display will not be able to overcome and negate the informational nature of a term. See a very recent case, In re Born in the USA LLC, Serial No. 87867549 (August 26, 2020) [not precedential], where the Board affirmed a refusal to register the phrase, BORN IN THE USA for clothing on grounds of failure to function as a trademark under Sections 1, 2, and 45 of the Trademark Act. The Board held that the phrase BORN IN THE USA is commonly used to indicate that goods originate and are made in the United States.

Even though the applicant had properly displayed the mark in the conventional location for shirts, on the inner neck of the apparel, the widespread use of this informational phrase BORN IN THE USA disallowed it from being perceived as a source indicator. The applicant in this case submitted seven third party registrations for marks consisting of or including the term “BORN IN THE USA” for unrelated goods. In response, the Board emphasized that they must review the case based on the record before it. It underscored that Applicant’s specimen places the proposed mark in very close proximity to the words “Made In The USA” further emphasizing the informational message.

These cases and numerous ones like them, remind applicants that the objective of the Trademark Act is not to register words, but to register trademarks. This means the terms/marks must be perceived as indicators of a single source. If you have questions regarding trademark registration, please feel free to contact my office for a courtesy consultation.

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